Search Engines and Legal Issues

A competitor is running a search engine ad with your trademarked brand name. Another has copied your web site without permission. You suspect another of driving up your advertising costs through click fraud. What are your legal options?

A special report from the Search Engine Strategies conference, December 13-16, 2004, Chicago, IL.

What can you do to protect your site from these online thieves? At this session, a panel of experts explored a wide range of issues related to search engines and legal protection.

A longer version of this story for Search Engine Watch members takes a closer look at trademarks and search engine advertising, covering the issues and tactics available to brand owners to protect themselves. The longer version also looks at click fraud and the legal remedies available to search engine advertisers who suspect competitors are driving up their costs through fraudulent clicks. Click here to learn more about becoming a member.

Copyright infringement

Copyright protection for a web site is just as enforceable as it is for traditional media. U.S. copyright law states that electronic files—including web files—are copyrighted the moment they’re put into a tangible form, even if they’re not on display to the general public. Protected web files may include the site’s content, code, scripting, graphic images, sound and video files.

“One way to determine if your site’s content has been stolen is to use the search engines,” said Matt Naeger, Vice President and General Counsel at IMPAQT. “The primary way is to see your copy in the search results. Copy-paste an extended piece of text from your web site and see what other web sites show up for that same text. Typically two sites shouldn’t legitimately show up for the exact same web copy. I would say I have seen higher rates of recidivism, if you can show publication through the search engine.”

If part of a site’s content has been stolen, one course of action is to send a cease-and-desist letter to the alleged online thief or an intermediary.

“A lot of ways these things are resolved is by going after an intermediary, so you don’t have to go to court directly with the infringer if there’s somebody else that’s pulling the strings,” said Eric Goldman, Assistant Professor of Law at Marquette University School of Law. “Send a notice to an intermediary, like a web host, and get them to take down content that is alleged to be infringing. You do have to do a little homework, but it is still pretty easy to do, and most of the times it can be resolved.”

Additionally, Goldman has found that sending a notice on a legal firm’s letterhead and citing the DMCA (Digital Millennium Copyright Act) is also a good way of getting people to remove infringed content.

“If I have a $500 million/year company, and a cease-and-desist letter is sent, 70 percent of the time its effective,” said David Rammelt, Partner at Kelley, Drye, and Warren, LLP. “If the company is too large of an entity, about half the time.”

“However, you also have to look out for recidivism, where that same person may go out and do it over and over again,” Goldman further explained. “So you may find yourself having to go after that person.”

Panelists also recommended formally registering the site for copyright protection.

“You always register, especially when you make substantial changes,” said Mark W. Ishman of Stark Law Group, LLC. “Obviously with a site that make changes daily, you may want to get yourself on some kind of schedule, with updates and all. I do a three-month cycle, since the spiders take about three months to entirely update their index. That seems to be a safe approach, since the search engines will be able to entirely update their databases by then.”

“In terms of filing registration, it is difficult to manage registrations on a timely basis,” Goldman continued. “Someone has to be in charge of it. You have to be serious and set up a program and set up someone in charge of it.”

Trademarks and search engine advertising

The main issue with paid search—in the sponsored links—is legally allowing bids on competitor’s trademarks. Can competitors legally use your actual trademarks in the ad copy itself?

“You don’t have to have a registered trademark to receive protection of that mark. If fact, only a small percentage of the trademarks that come to us are actually registered,” Rammelt explained. “Typically, as first use in commerce, you have priority rights to that mark, even in the face of a later registered mark. Trademark registration is much easier than copyright registration. You have to pay between $2K-$3K, but you only have to do it one time.”

“As for parody sites, those can exist under fair use,” Ishman continued. “Other types of terms would apply to other sites, where you can piggy-back on your competitor as long as you’re doing it to compare. As long as you are identifying that trademark as of your competitor to your goods and services—that’s OK. But what’s happening at American Blinds is completely, in my opinion, making trademark law more confusing than it is now.”

Click fraud

Click fraud is the practice of clicking on PPC (pay-per-click) advertisements to increase advertiser costs. According to Jeffrey Rohrs, President of Optiem LLC, some of the reasons for click fraud include:

Make money, if you are an AdSense producer

Run up competitor’s costs

Exhaust competitor’s budgets, especially if your competitors are day parting. You can exhaust your competitor’s budget early in the day, and drive your own click costs down later in the day.

“Does Google has some kind of duty to self-police trademark usage on the Internet? We’ve never advocated that,” said Rammelt. “I don’t think that Google has any kind of duty, other than a contractual duty, to police its click fraud. I’m not sure if, absent a contract, it would be fair to put them in a position to legally require them to police it. From a technological standpoint, they are the only ones that can do it, I think.”

“Their fraud departments are growing by the day,” he said, “but the amount of click fraud is increasing so much that they’re never going to have the ability to root out all instances of click fraud on their own.”

Grant Crowell is the CEO and Creative Director at Grantastic Designs, Inc.. He has 15 combined years of experience in the fields of print and online design, newspaper journalism, public relations, and publications.

A longer version of this story for Search Engine Watch members takes a closer look at trademarks and search engine advertising, covering the issues and tactics available to brand owners to protect themselves. The longer version also looks at click fraud and the legal remedies available to search engine advertisers who suspect competitors are driving up their costs through fraudulent clicks. Click here to learn more about becoming a member.

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